Contents
Short Title
1Short title#
This Act may be cited as the College of Patent Agents and Trademark Agents Act.note
Interpretation and Application
2Definitions#
The following definitions apply in this Act.
investigator means an individual designated under section 42. (enquêteur)
licensee means a patent agent or a trademark agent. (titulaire de permis)
patent agent means an individual who holds a patent agent licence or a patent agent in training licence issued under section 26. (agent de brevets)
privileged means protected by litigation privilege, by solicitor-client privilege, by the professional secrecy of advocates and notaries or by the privilege set out in section 16.1 of the Patent Act or section 51.13 of the Trademarks Act. (protégé)
trademark agent means an individual who holds a trademark agent licence or a trademark agent in training licence issued under section 29. (agent de marques de commerce)
Establishment and Organization
College
5Establishment#
(1)A corporation without share capital is established, to be known as the College of Patent Agents and Trademark Agents.
(2)Subject to any regulations made under paragraph 76(1)(a.1), the Canada Not-for-profit Corporations Act does not apply to the College.
6Purpose#
The purpose of the College is to regulate patent agents and trademark agents in the public interest, in order to enhance the public’s ability to secure the rights provided for under the Patent Act and the Trademarks Act.note
7Head office#
The head office of the College is to be in the National Capital Region, as described in the schedule to the National Capital Act.
8Capacity#
In carrying out its purpose, the College has the capacity and the rights, powers and privileges of a natural person, including the power to
(a)purchase or otherwise acquire, or lease, any real or personal property or immovable or movable;
(b)sell or otherwise dispose of, or lease, any of its acquired or leased property; and
(c)borrow money.
note
10Official Languages Act#
The Official Languages Act applies to the College.
Board of Directors
13Composition#
(2)The Minister must, by order, fix the number of directors.
(4)The number of appointed directors fixed under subsection (3) must not be greater than the minimum number that is required to constitute a majority of directors on the Board.
(5)The remaining directors are to be licensees elected in accordance with the by-laws, and at least one elected director must be a patent agent and at least one must be a trademark agent.
14Ineligibility#
An individual is not eligible to be appointed or elected as a director if they
(a)are less than 18 years of age;
(b)have the status of bankrupt;
(c)are a member of an association whose primary purpose is to represent the interests of persons who provide advice on patents or trademarks;
(d)were, within the preceding 12 months, a member of a governing body or a steering committee of an association referred to in paragraph (c);
(e)in the case of an appointment to the Board,
(i)are a licensee, or
(ii)are employed by a department, as defined in section 2 of the Financial Administration Act; or
(f)in the case of election to the Board,
(i)have a licence that is suspended, or
(ii)meet any other ineligibility criteria set out in the by-laws.
note
15Term#
(1)Each director is to be appointed or elected for a term of not more than three years, and may be reappointed or re-elected for subsequent terms of not more than three years each.
(2)The length of a director’s term is
(a)set out by the Minister in the order appointing the director, if the director is appointed; or
(b)determined in accordance with the by-laws, if the director is elected.
(3)For greater certainty, it is not necessary that all directors hold office for terms that begin or end on the same day.
(4)Despite subsection (1) and subject to section 17, an appointed director continues to hold office until they are re-appointed or their successor is appointed.
note
16Removal — appointed directors#
(1)An appointed director holds office during good behaviour and may be removed for cause by the Minister.
(2)An elected director may be removed in accordance with the by-laws.
17Ceases to be director#
A director ceases to be a director if they
(a)die;
(b)resign;
(c)become bankrupt;
(d)become a member of an association whose primary purpose is to represent the interests of persons who provide advice on patents or trademarks;
(e)become a member of a governing body or a steering committee of an association referred to in paragraph (d);
(f)are removed from office under section 16;
(g)in the case of an appointed director,
(i)become a licensee, or
(ii)become an employee of a department, as defined in section 2 of the Financial Administration Act; or
(h)in the case of an elected director,
(i)have a licence that is suspended,
(ii)cease to be a licensee, or
(iii)meet the ineligibility criteria set out in the by-laws.
note
18Remuneration#
The College may pay to the directors the remuneration and expenses that are determined in accordance with the by-laws.
19Chairperson#
(1)The Chairperson is to be elected by the Board from among the directors in accordance with the by-laws.
(2)The Chairperson presides over meetings of the Board and performs any other duties that are assigned to the Chairperson by the by-laws.
(3)The Board may remove the Chairperson in accordance with the by-laws.
20Meetings#
(1)The Board must hold a meeting at least once every calendar year.
(2)Subject to the by-laws, meetings of the Board are open to the public.
Committees, Registrar and Chief Executive Officer
21Investigations Committee and Discipline Committee#
(1)Two committees of the College are established, to be known as the Investigations Committee and the Discipline Committee.
(2)The members of each committee are to be appointed by the Board in accordance with the regulations.
(3)An individual is not permitted to be a member of either committee if
(a)they are a member of an association whose primary purpose is to represent the interests of persons who provide advice on patents or trademarks; or
(b)they are a member of a governing body or a committee of an association referred to in paragraph (a).
(4)An individual is not permitted to be a member of the Discipline Committee and the Investigations Committee at the same time.
note
Immunity
23.1Responsibility for damages — directors and others#
No action or other proceeding for damages lies or may be instituted against any of the following persons for anything done or omitted to be done in good faith in the exercise or purported exercise of any power, or in the performance or purported performance of any duty or function, conferred on that person under the Act:
(a)a current or former director of the Board;
(b)a current or former member of a committee of the College;
(d)a current or former investigator;
(e)a current or former officer, employee, agent or mandatary of the College; and
(f)a person who is or has been engaged by the College.
note
23.2Right of indemnification#
The College must indemnify the persons referred to in section 23.1 against all costs, charges and expenses, including an amount paid to settle an action or satisfy a judgment, reasonably incurred by them in respect of any civil, criminal, administrative or other proceeding in which they are involved for anything done or omitted to be done in good faith in the exercise or purported exercise of any power, or in the performance or purported performance of any duty or function, conferred on that person under the Act.note
23.3Responsibility for damages — complainant or others#
No action or other proceeding for damages lies or may be instituted against a person for disclosing any information or document to the College or to an investigator in good faith, or for making a complaint about a licensee to the College in good faith.note
Powers of Minister and Report
24Powers of Minister#
(1)The Minister may
(a)review the Board’s activities and require the Board to provide reports and information, other than privileged information, to the Minister; or
Licensees
Patent Agents
26Patent agent licence#
(1)On application, the Registrar must issue a patent agent licence to an individual who meets the requirements under the regulations.
(2)On application, the Registrar must issue a patent agent in training licence to an individual who meets the requirements under the regulations.
(3)A licence issued under this section is subject to any conditions imposed under this Act.
27Representation before Patent Office#
Subject to any restrictions imposed under this Act, a patent agent whose licence is not suspended is entitled to represent persons in the presentation and prosecution of applications for patents or in other business before the Patent Office.
28Register#
(1)The Register of Patent Agents must include the following information:
(a)the name and contact information of every patent agent and the name and contact information of any firm of which the patent agent is a member;
(b)for every patent agent, any conditions that are imposed on their licence under this Act and any restrictions that are imposed under this Act on their entitlement to provide representation;
(c)in the case of a patent agent whose licence is suspended, an indication that their licence is suspended and the date on which it was suspended;
(d)for every patent agent, all disciplinary measures imposed on them by the Discipline Committee;
(e)the name of every individual whose patent agent licence or patent agent in training licence was surrendered or revoked; and
(f)any other information required by the regulations or by-laws.
(2)The Registrar must ensure that the information included in the Register is updated in a timely manner.
(3)The Register must be made available to the public on the College’s website in a searchable format.
(4)The Registrar must provide the Commissioner of Patents, within the time and in the form and manner that are specified by the Commissioner, with the most recent information referred to in paragraph (1)(a), other than information relating to a patent agent whose licence is suspended.
Trademark Agents
29Trademark agent licence#
(1)On application, the Registrar must issue a trademark agent licence to an individual who meets the requirements under the regulations.
(2)On application, the Registrar must issue a trademark agent in training licence to an individual who meets the requirements under the regulations.
(3)A licence issued under this section is subject to any conditions imposed under this Act.
note
30Representation before Office of the Registrar of Trademarks#
Subject to any restrictions imposed under this Act, a trademark agent whose licence is not suspended is entitled to represent persons in the presentation and prosecution of applications for the registration of trademarks or in other business before the Office of the Registrar of Trademarks.note
31Register#
(1)The Register of Trademark Agents must include the following information:
(a)the name and contact information of every trademark agent and the name and contact information of any firm of which the trademark agent is a member;
(b)for every trademark agent, any conditions that are imposed on their licence under this Act and any restrictions that are imposed under this Act on their entitlement to provide representation;
(c)in the case of a trademark agent whose licence is suspended, an indication that their licence is suspended and the date on which it was suspended;
(d)for every trademark agent, all disciplinary measures imposed on them by the Discipline Committee;
(e)the name of every individual whose trademark agent licence or trademark agent in training licence was surrendered or revoked; and
(f)any other information required by the regulations or by-laws.
(2)The Registrar must ensure that the information included in the Register is updated in a timely manner.
(3)The Register must be made available to the public on the College’s website in a searchable format.
(4)The Registrar must provide the Registrar of Trademarks, within the time and in the form and manner that are specified by the Registrar of Trademarks, with the most recent information referred to in paragraph (1)(a), other than information relating to a trademark agent whose licence is suspended.
note
Obligations
33Code of professional conduct#
(1)The Minister must, by regulation, establish a code of professional conduct for licensees.
34Professional liability insurance#
(1)Subject to subsections (2) and (3), a licensee must be insured against professional liability.
(2)A licensee who is employed by Her Majesty in right of Canada or a province, or by an agent of Her Majesty in right of Canada or an agent or mandatary of Her Majesty in right of a province, is not required to be insured against professional liability for work done as a licensee within the scope of that employment.
(3)A licensee may be exempted by the by-laws from the application of subsection (1).
Suspension, Revocation and Surrender of Licences
35Suspension#
(a)pay the annual fee in accordance with the by-laws;
(b)pay, within the time and in the manner provided for under this Act, any other fee or amount that the licensee is required to pay under this Act;
(c)provide any information or document in accordance with the by-laws;
(d)comply with any requirement that is imposed by the by-laws with respect to continuing professional development;
(e)comply with a condition of their licence that is imposed under this Act;
(f)comply with any requirement with respect to professional liability insurance that is imposed under this Act; or
(g)comply with any other requirement that is imposed under the by-laws.
Investigations
Duty to Investigate
37.1Powers#
(1)The Investigations Committee may take any of the following actions in respect of a licensee who is under investigation if it is satisfied that it is necessary for the protection of the public:
(b)impose restrictions on the licensee’s entitlement to represent persons under section 27 or 30;
(3)Any action taken under subsection (1) is provisional and ceases to have effect if
(a)the Discipline Committee makes a decision under subsection 37.2(2) that amends or revokes the action;
(b)the Investigations Committee dismisses the matter under subsection 49(1);
(c)the Investigations Committee withdraws the application under section 50;
(d)the Discipline Committee exercises its powers under section 56; or
(e)the Discipline Committee renders a decision under section 57.
note
37.2Request for review#
(1)A licensee who receives a notice under subsection 37.1(2) may, at any time, request a review of the decision of the Investigations Committee made under subsection 37.1(1) by making an application to the Discipline Committee.
(2)On completion of the review, the Discipline Committee may confirm, amend or revoke any action taken by the Investigations Committee. If the Discipline Committee amends the actions, they cease to have effect in the circumstances referred to in paragraphs 37.1(3)(b) to (e).
(3)The Discipline Committee must, in writing, notify the licensee and the Investigations Committee of its decision and the reasons for it.
note
38Notice to licensee#
The Investigations Committee must give notice, before the conclusion of the investigation and in accordance with the by-laws, of the nature of an investigation to the licensee who is its subject and give the licensee a period of at least 30 days after the date of the notice within which they may make written representations to the Committee.
Complaints
38.1Dismissal or referral#
(1)The Registrar must consider all complaints received by the College relating to professional misconduct or incompetence by a licensee and may, subject to and in accordance with the by-laws, dismiss any complaint, in whole or in part, for any of the reasons set out in the regulations, but if they do not dismiss the complaint the Registrar must refer it to the Investigations Committee for consideration.
(2)If the Registrar dismisses the complaint, the Registrar must notify the complainant in writing of the decision and the reasons for the dismissal and the notice must inform the complainant of their right to appeal the decision to the Investigations Committee within 30 days after the date of the notice.
(3)The Registrar is not permitted to disclose privileged information in their notice to the complainant.
(4)The complainant who receives a notice under subsection (2) may, within 30 days after the date of the notice, request an appeal of the Registrar’s decision to the Investigations Committee.
(5)The Investigations Committee must dispose of the appeal by dismissing it or allowing it and, if they allow it, they must consider the complaint.
note
39Role of Investigations Committee#
The Investigations Committee must consider all complaints that are referred to it by the Registrar and make a determination in respect of all appeals requested under subsection 38.1(4).note
40Conclusion of consideration#
(1)If, after considering a complaint, the Investigations Committee does not have reasonable grounds to believe that the licensee has committed professional misconduct or was incompetent, the Committee must dismiss the complaint and notify the complainant in writing of the dismissal and the reasons for it.
(2)The Investigations Committee is not permitted to disclose privileged information in its notice to the complainant.
Conduct of Investigation
42Investigator#
(1)The Investigations Committee may designate an individual as an investigator to conduct an investigation under the Committee’s direction.
(2)The Investigations Committee may revoke the designation.
43Powers of investigator#
(1)For the purpose of investigating a licensee’s conduct and activities, an investigator may
(a)subject to subsection (3), enter the licensee’s business premises at any reasonable time and require the production of any document or other thing that is relevant to the investigation, and examine or copy the document or thing or remove it for examination or copying; and
(2)An investigator may take any action under subsection (1) with respect to any privileged information, including privileged information contained in a document or other thing, unless the information
(a)is subject to litigation privilege or solicitor-client privilege or the professional secrecy of advocates and notaries;
(b)is not protected by the privilege set out in section 16.1 of the Patent Act or section 51.13 of the Trademarks Act; and
(c)is not related to a patent, a trademark, a geographical indication or a mark referred to in paragraph 9(1)(e), (i), (i.1), (i.3), (n) or (n.1) of the Trademarks Act.
(3)If the licensee’s business premises are in a dwelling-house, the investigator may enter them only with the occupant’s consent or under the authority of a warrant issued under section 44.
(4)An investigator may remove a document or other thing from business premises under paragraph (1)(a) only if the investigator gives a person who appears to be in control of the premises a receipt for the document or thing.
note
44Warrant#
(1)On the application of an investigator, the Federal Court may issue a warrant authorizing an investigator to do anything set out in subsection (2) if the Court is satisfied by information on oath that
(a)there are reasonable grounds to believe that a licensee has committed professional misconduct or was incompetent;
(b)there are reasonable grounds to believe that there are documents or things in a place, including a dwelling-house, that are relevant to an investigation into the licensee’s conduct or activities; and
(c)the warrant is necessary because
(i)there are reasonable grounds to believe that the matter is urgent and that it would be impractical to carry out the investigation using only other investigative procedures,
(ii)there are reasonable grounds to believe that the powers conferred by section 43 have been or are likely to be ineffective,
(iii)there are reasonable grounds to believe that information in the documents or other things meets all the conditions set out in paragraphs 43(2)(a) to (c), or
(iv)section 43 does not authorize the investigator to enter the place.
(2)A warrant may authorize an investigator, subject to any conditions set out in the warrant, to
(a)enter and search the place referred to in paragraph (1)(b);
(b)examine or copy any document or other thing that is relevant to the investigation and that is in the place, including any document or thing that contains information that is privileged; and
(c)remove from the place any document or other thing that is relevant to the investigation, including any document or thing that contains information that is privileged.
(3)An investigator who removes a document or other thing from a place under the warrant must give a receipt for the document or thing to a person who appears to be in control of the place.
(4)In executing a warrant, an investigator may use force only if they are named in the warrant, are expressly authorized by it to use force and are accompanied by a peace officer.
(5)An application under subsection (1) may be made ex parte.
45Order — document or information#
(1)On the application of an investigator, the Federal Court may make an order requiring a person to produce any document or other thing for examination, copying or removal by an investigator or to provide any information to an investigator, subject to any conditions that are specified in the order, if the Court is satisfied by information on oath that
(a)there are reasonable grounds to believe that a licensee has committed professional misconduct or was incompetent;
(b)there are reasonable grounds to believe that the document, thing or information is relevant to an investigation into the licensee’s conduct or activities; and
(c)the order is necessary because
(i)there are reasonable grounds to believe that the matter is urgent and that it would be impractical to carry out the investigation using only other investigative procedures,
(ii)there are reasonable grounds to believe that the powers conferred by section 43 have been or are likely to be ineffective,
(iii)paragraph 43(1)(b) does not authorize the investigator to require the person to provide the information, or
(iv)there are reasonable grounds to believe that the document or thing contains information that meets, or the information meets, all the conditions set out in paragraphs 43(2)(a) to (c).
(2)An order under subsection (1) may be made with respect to any privileged information, including privileged information contained in a document or other thing.
(3)An application under subsection (1) may be made ex parte.
(4)An investigator who removes a document or other thing produced under an order must give a receipt for the document or thing to the person who produces it.
46Sealing and notification — legal counsel#
(1)If an investigator requires the production of a document or other thing — or is about to examine, copy or remove it — under section 43, under a warrant issued under section 44 or under an order made under section 45, and the document or thing is in the possession of legal counsel or a firm of legal counsel,
(a)the investigator must not examine or copy the document or thing;
(b)legal counsel or a representative of the firm must place the document or thing in a package and seal and identify the package in accordance with the regulations;
(c)the investigator must retain and remove the package once it is sealed; and
(d)legal counsel or the firm must take all reasonable steps
(i)to notify the holder of a privilege with respect to the document or thing within the period prescribed by regulation, or
(ii)if the holder cannot be located within that period, to immediately notify the law society of the applicable province or the Chambre des notaires du Québec, as the case may be.
(2)If an investigator requires the production of a document or other thing — or is about to examine, copy or remove it — under section 43, under a warrant issued under section 44 or under an order made under section 45, a person in possession of the document or thing may object to its production, examination, copying or removal on one or more of the following grounds:
(a)the document or thing is not relevant to the investigation;
(b)if the investigator is acting under section 43, the document or thing contains information that meets all the conditions set out in paragraphs 43(2)(a) to (c);
(c)if the investigator is acting under the authority of a warrant or order, the production, examination, copying or removal of the document or thing is not authorized by the warrant or order.
(3)If the person makes an objection under subsection (2),
(a)the investigator must not examine or copy the document or thing;
(b)the person must place the document or thing in a package and seal and identify the package in accordance with the regulations;
(c)the investigator must retain and remove the package once it is sealed; and
(d)if the person is not the owner of the document or thing or the holder of a privilege with respect to it, the person must immediately notify the owner or holder of the objection.
(4)The legal counsel or firm referred to in subsection (1), the person who makes the objection under subsection (2) or any other person who has a right or interest in the document or other thing that is sealed may apply to the Federal Court in accordance with the regulations for a determination of whether any of the grounds set out in paragraphs (2)(a) to (c) apply with respect to the document or thing.
(5)The sealed package is to be retained, opened or returned only in accordance with the regulations.
47Return or application for retention order#
(1)An investigator who, as a result of the application of any of sections 43 to 45 or the regulations referred to in subsection 46(5), is in possession of a document or other thing that is not in a sealed package must, within the applicable period determined in accordance with the regulations made under paragraph 76(1)(i), return the document or thing or apply to the Federal Court for a retention order under subsection (2).
(2)On application by the investigator, the Federal Court may order that the document or thing may be retained by the investigator until no later than the conclusion of the investigation or, if an application is made to the Discipline Committee under subsection 49(1), until the final disposition of the proceedings before the Discipline Committee and any appeals. If the Court does not order that the document or thing be retained, the document or thing must be returned as soon as feasible.
48Application for return#
(1)A person who has a right or interest in a document or other thing that, as a result of the application of any of sections 43 to 45 or the regulations referred to in subsection 46(5), is in the possession of an investigator and that is not in a sealed package may, on giving notice to the Investigations Committee, apply to the Federal Court for an order that the document or thing be returned or that any copies of the document or thing made by or on behalf of the Committee or an investigator be destroyed.
(2)The Court may order, on any conditions that it considers appropriate,
(a)that the document or thing be returned; and
(b)that any copies of the document or thing made by or on behalf of the Investigations Committee or an investigator be destroyed, if the removal of the document or thing by an investigator was not authorized under this Act.
Conclusion of Investigation
49Application or dismissal#
(1)If, at the conclusion of an investigation, the Investigations Committee is satisfied that there is sufficient evidence that the licensee has committed professional misconduct or was incompetent, the Committee must apply to the Discipline Committee for a decision as to whether the licensee committed professional misconduct or was incompetent. Otherwise, the Investigations Committee must dismiss the matter.
(2)The Investigations Committee must consider any written representations made by the licensee under section 38 before the conclusion of the investigation.
(3)The Investigations Committee must, in writing, notify the licensee and any complainant of the application or dismissal and, in the case of dismissal, the reasons for it.
(4)The Investigations Committee is not permitted to disclose privileged information in its notice to the licensee or complainant.
Disciplinary Proceedings
51Oral hearing#
The Discipline Committee must hold an oral hearing for every application made by the Investigations Committee in order to determine whether a licensee committed professional misconduct or was incompetent.
52Hearings open to public#
Except to the extent necessary to protect privileged or confidential information, the hearings of the Discipline Committee are open to the public.
54Right of complainant to make submissions#
If the application results from a complaint, the complainant is entitled to make oral and written submissions to the Discipline Committee.
55Powers#
(1)The Discipline Committee has the power
(a)to summon and enforce the appearance of persons and compel them to give oral or written evidence on oath and to produce any document or other thing that the Committee considers necessary to decide the application, in the same manner and to the same extent as a superior court of record;
(b)to administer oaths; and
(c)to accept any evidence, whether admissible in a court of law or not.
(2)The Discipline Committee may take any action referred to in subsection (1) with respect to information that is privileged.
56Powers before decision#
(1)Before making a decision under section 57, the Discipline Committee may take any action referred to in any of paragraphs 57(3)(a) to (c) if the Discipline Committee is satisfied that it is necessary for the protection of the public.
(2)Any action taken under subsection (1) is provisional and ceases to have effect
(a)after the decision on the application is made, unless the action is confirmed in the decision; or
(b)if the application is withdrawn.
57Decision on application#
(1)After the hearing of an application, the Discipline Committee must decide whether the licensee has committed professional misconduct or was incompetent.
(2)If the Discipline Committee decides that the licensee did not commit professional misconduct or was not incompetent, the Committee must dismiss the application.
(3)If the Discipline Committee decides that the licensee has committed professional misconduct or was incompetent, the Committee may, in its decision,
(b)impose restrictions on the licensee’s entitlement to represent persons under section 27 or 30;
(e)reprimand the licensee;
(i)take or require any other action that the Committee considers appropriate in the circumstances.
(4)The Discipline Committee must give its decision and the reasons for it in writing.
(5)A decision and the reasons for it, other than any privileged and confidential information contained in the decision or reasons, must be made available to the public on the College’s website.
58Notice to Registrar#
(1)The Discipline Committee must provide a copy of every decision made under section 57 to the Registrar.
59Appeal to Federal Court#
A party to an application may appeal a decision of the Discipline Committee made under section 57 to the Federal Court within 30 days after the day on which the decision is made.
60Filing of decision in Federal Court#
(1)The College may file in the Federal Court a certified copy of a final decision of the Discipline Committee made under section 57 that is not subject to appeal.
(2)On the certified copy being filed, the decision becomes and may be enforced as an order of the Federal Court.
61Suspension lifted if conditions met#
(2)An application under subsection (1) may be made ex parte.
(3)The Discipline Committee must provide written notice to the Registrar as soon as feasible after it lifts the suspension.
(4)The Registrar may, at any time after the second anniversary of the day on which a licence is suspended under paragraph 57(3)(c) until specified conditions are met and after giving at least 30 days’ written notice to the licensee, revoke the licence if the suspension has not been lifted under subsection (1).
Practice and Procedure
Confidentiality
64No waiver#
For greater certainty, the disclosure of privileged information to the College, including to the Investigations Committee or to the Discipline Committee, or to an investigator does not constitute a waiver of the privilege.
65No disclosure#
(1)Subject to subsection (2), the following persons must not disclose a complaint received by the College or any privileged or confidential information obtained in the course of an investigation or proceeding under this Act:
(a)a current or former director of the Board;
(b)a current or former member of the Investigations Committee or of the Discipline Committee;
(d)a current or former investigator;
(e)a current or former officer, employee, agent or mandatary of the College;
(f)a person who is or has been engaged by the College.
(2)A person referred to in subsection (1) may disclose a complaint or information referred to in that subsection if
(a)the disclosure is for the purpose of permitting the exercise of powers or the performance of duties or functions under this Act, including in connection with a proceeding under this Act;
(b)the information is available to the public;
(c)the disclosure is to the person’s legal counsel;
(d)the person has obtained the written consent of all persons whose rights or interests might reasonably be affected by the disclosure; or
(e)there are reasonable grounds to believe that
(i)there is a significant risk of harm to any person if the disclosure is not made, and
(ii)making the disclosure is likely to reduce the risk.
(3)A person referred to in subsection (1) is not required, in any proceeding other than a proceeding under this Act,
(a)to give testimony on a complaint received by the College or on any privileged or confidential information that the person is prohibited from disclosing under that subsection; or
(b)to produce such a complaint or any document or other thing that contains any such privileged or confidential information.
66Application for order authorizing disclosure#
(1)The College may apply to the Federal Court for an order authorizing the disclosure of confidential information that would be prohibited by section 65 to a law enforcement agency or other public authority.
(2)The Court must not make an order if the information is privileged or if it was obtained by the College as a result of a person making, in the course of an investigation or proceeding under this Act, an oral or written statement that may tend to incriminate the person.
(3)An order that authorizes the disclosure of information may also authorize the delivery of documents or other things that are in the possession of the College and that relate to the information.
Prohibitions and Offences
67Claiming to be patent agent#
A person, other than a patent agent whose licence is not suspended, must not
(a)use the title “patent agent” or a variation or abbreviation of that title, or any words, name or designation, in a manner that leads to a reasonable belief that the person is a patent agent; or
(b)represent themselves, in any way or by any means, to be a patent agent.
68Claiming to be trademark agent#
A person, other than a trademark agent whose licence is not suspended, must not
(a)use the title “trademark agent” or a variation or abbreviation of that title, or any words, name or designation, in a manner that leads to a reasonable belief that the person is a trademark agent; or
(b)represent themselves, in any way or by any means, to be a trademark agent.
note
69Offence and punishment — section 67 or 68#
(1)Every person who contravenes section 67 or 68 is guilty of an offence and liable on summary conviction to a fine of not more than
(a)$25,000 for a first offence; and
(b)$50,000 for a second or subsequent offence.
(2)If a person is convicted of an offence under subsection (1), no imprisonment is to be imposed as punishment for the offence or in default of payment of any fine imposed as punishment in relation to the offence.
(3)A person is not to be found guilty of an offence under subsection (1) if they establish that they exercised due diligence to prevent the commission of the offence.
70Unauthorized representation before Patent Office#
(1)Subject to subsection (2) and the regulations, a person must not represent another person in the presentation and prosecution of applications for patents or in other business before the Patent Office.
(2)Subsection (1) does not apply to a patent agent whose licence is not suspended, to legal counsel who is providing legal services as authorized by law or to a person who is part of a class of persons exempted under the regulations.
71Unauthorized representation before Office of the Registrar of Trademarks#
(1)Subject to subsection (2) and the regulations, a person must not represent another person in the presentation and prosecution of applications for the registration of trademarks or in other business before the Office of the Registrar of Trademarks.
(2)Subsection (1) does not apply to a trademark agent whose licence is not suspended, to legal counsel who is providing legal services as authorized by law or to a person who is part of a class of persons exempted under the regulations.
note
72Regulations#
The Governor in Council may make regulations exempting an activity, a class of persons or an activity that is performed by a class of persons from the application of subsection 70(1) or 71(1).
73Offence and punishment — section 70 or 71#
(1)Every person who contravenes section 70 or 71 is guilty of an offence and liable on summary conviction
(a)for a first offence, to a fine of not more than $25,000 or to imprisonment for a term of not more than six months, or to both; and
(b)for a second or subsequent offence, to a fine of not more than $50,000 or to imprisonment for a term of not more than six months, or to both.
(2)A person is not to be found guilty of an offence under subsection (1) if they establish that they exercised due diligence to prevent the commission of the offence.
74Injunction#
On application by the College, if the Federal Court is satisfied that a contravention of section 67, 68, 70 or 71 is being or is likely to be committed, the Court may grant an injunction, subject to any conditions that it considers appropriate, ordering any person to cease or refrain from any activity related to that contravention or ordering the person to take any measure that the Court considers appropriate.
By-laws and Regulations
75By-laws#
(1)The Board may make by-laws respecting any matter necessary to carry on the activities of the College, including by-laws
(a)respecting the election of directors, the terms of elected directors and their removal;
(b)establishing ineligibility criteria for the purposes of subparagraphs 14(f)(ii) and 17(h)(iii);
(c)respecting the filling of vacancies among elected directors;
(d)respecting the remuneration and expenses of directors;
(e)respecting the election and removal of the Chairperson of the Board and the Chairperson’s duties;
(f.1)respecting the creation of committees;
(g)respecting the conflicts of interest of directors, members of the Investigations Committee and members of the Discipline Committee;
(h)respecting the duties and functions of the Registrar;
(i)respecting the maintenance of the Register of Patent Agents and the Register of Trademark Agents and information that is required to be included in those Registers;
(i.1)defining the terms “professional misconduct” and “incompetence” for the purposes of this Act;
(k)fixing the annual fee — or the manner of determining the annual fee — that is to be paid by licensees;
(l)fixing any other fee — or the manner of determining any other fee — that is to be paid by licensees, including any fee for the late payment of another fee;
(m)establishing the time within which and the manner in which any fees or other amounts are to be paid;
(n)respecting the information and documents that licensees must provide to the College;
(o)respecting continuing professional development requirements for licensees;
(p)respecting requirements for licensees to do pro bono work;
(q)respecting the professional liability insurance that licensees are required to maintain;
(r)exempting licensees from the requirement to be insured against professional liability;
(s)respecting the suspension and revocation of licences under section 35;
(t)respecting the surrender of licences and applications for a surrender;
(t.2)respecting the form and manner in which the Registrar may dismiss a complaint; and
(u)respecting the notification of licensees under section 38.
(2)The by-laws made under paragraphs (1)(j) to (t) and (u) may distinguish among classes of licensees or licences.
(3)For greater certainty, by-laws made under paragraphs (1)(i.1) to (u) are regulations for the purposes of the Statutory Instruments Act.
note
76Regulations — Governor in Council#
(1)The Governor in Council may make regulations for carrying out the purposes and provisions of this Act, including regulations
(a)respecting the Investigations Committee, the Discipline Committee and other committees of the College, including the composition of those committees, the eligibility for membership in them, the terms of the members and their removal;
(a.1)respecting the application of any provisions of the Canada Not-for-profit Corporations Act to the College;
(a.2)limiting the powers, duties and functions that may be delegated by the Registrar and the persons to whom they may be delegated;
(b)respecting the reports and information that must be provided or submitted to the Minister;
(c)respecting conditions to be imposed on licences or classes of licences;
(d)respecting the requirements that individuals or classes of individuals must meet under section 26 or 29, including requirements in relation to qualifying examinations and in relation to fees with respect to qualifying examinations;
(e)respecting what constitutes representation for the purposes of sections 27 and 70 or for the purposes of sections 30 and 71;
(f)respecting restrictions on the entitlement of licensees or classes of licensees to provide representation under section 27 or 30;
(g)respecting the information to be included in the Register of Patent Agents or the Register of Trademark Agents;
(g.1)prescribing the reasons for which the Registrar may dismiss a complaint;
(h)respecting the sealing of documents and other things and objections under section 46, including in relation to notifications, the identification of sealed packages, applications to the Federal Court and the retention, opening and return of sealed packages; and
(i)respecting the determination of the applicable periods referred to in subsection 47(1).
(2)Regulations made under paragraph (1)(a.2) may authorize the Board or any committee of the College, and those made under paragraphs (1)(c), (d), (f) and (g) may authorize the Board, the Registrar or any committee of the College, to make by-laws with respect to all or part of the subject matter of the regulations and, for greater certainty, those by-laws are regulations for the purposes of the Statutory Instruments Act.
(3)Regulations made under paragraph (1)(h) may authorize the Federal Court to make orders respecting the retention, opening or return of sealed packages.
note
77Regulations prevail#
The regulations prevail over the by-laws to the extent of an inconsistency or conflict between them.
Transitional Provisions
78Definition of coming-into-force day#
In sections 79 to 86, coming-into-force day means the day on which section 13 comes into force.
79Initial organization of board#
(2)Two of the directors are to be appointed on the recommendation of the Intellectual Property Institute of Canada, with one to be an individual whose name is on the register kept under section 15 of the Patent Act and the other to be an individual whose name is on the list of trademark agents kept under section 28 of the Trademarks Act.
(3)The Minister of Industry must designate a Chairperson from among the directors.
(4)The directors appointed on the recommendation of the Intellectual Property Institute of Canada who hold office on the coming-into-force day are deemed to have been elected under subsection 13(5) on that day, for a term that ends on the earlier of the day on which the first election is held under that subsection and the first anniversary of the coming-into-force day. The other directors who hold office on the coming-into-force day are deemed to have been appointed under subsection 13(3) on that day for a term that ends on the first anniversary of that day.
(5)For greater certainty, section 17 applies as of the coming-into-force day with respect to directors who are deemed to be elected or appointed under subsection (4).
(6)Before the coming-into-force day, a director appointed under subsection (1) may be removed for cause by the Minister of Industry.
(7)Before the coming-into-force day, the College may pay the remuneration and expenses that it fixes to the directors.
note
81College not a Crown Corporation#
Despite Part X of the Financial Administration Act, the College is not a Crown corporation within the meaning of that Act.
82Deemed issued patent agent licence#
An individual is deemed to have been issued a patent agent licence under subsection 26(1) on the coming-into-force day if their name was, on the day before the coming-into-force day, on the register kept under section 15 of the Patent Act.
83Deemed issued trademark agent licence#
An individual is deemed to have been issued a trademark agent licence under subsection 29(1) on the coming-into-force day if their name was, on the day before the coming-into-force day, on the list of trademark agents kept under section 28 of the Trademarks Act.note
84Provision of information — patents#
The Commissioner of Patents may, for the purpose of enabling the College or the Registrar to exercise their powers or perform their duties and functions under this Act, provide the Registrar with information relating to an individual or firm whose name is or was on the register kept under section 15 of the Patent Act, an individual who has sat for the qualifying examination for patent agents or an individual who has notified the Commissioner in writing of their intention to sit for the examination, including
(a)the individual’s or firm’s name and contact information and, in the case of an individual, the name of any firm of which they are a member;
(b)whether the Commissioner has refused to recognize the individual or firm as a patent agent or attorney under section 16 of the Patent Act;
(c)any complaints against the individual or firm; and
(d)the results of any qualifying examinations for patent agents.
85Provision of information — trademarks#
The Registrar of Trademarks may, for the purpose of enabling the College or the Registrar to exercise their powers or perform their duties and functions under this Act, provide the Registrar with information relating to an individual or firm whose name is or was on the list of trademark agents kept under section 28 of the Trademarks Act, an individual who has sat for the qualifying examination for trademark agents or an individual who has notified the Registrar of Trademarks in writing of their intention to sit for the examination, including
(a)the individual’s or firm’s name and contact information and, in the case of an individual, the name of any firm of which they are a member;
(b)any complaints against the individual or firm; and
(c)the results of any qualifying examinations for trademark agents.
note
86Regulations — transitional matters#
Without limiting the generality of section 76, the Governor in Council may make regulations respecting transitional matters relating to
(a)qualifying examinations for patent agents and trademark agents;
(b)the requirements to be met under section 26 by an individual who has sat for the qualifying examination for patent agents before the coming-into-force day or who has, before that day, notified the Commissioner of Patents in writing of their intention to sit for the examination but whose name was not, on the day before that day, on the register kept under section 15 of the Patent Act; and
(c)the requirements to be met under section 29 by an individual who has sat for the qualifying examination for trademark agents before the coming-into-force day or who has, before that day, notified the Registrar of Trademarks in writing of their intention to sit for the examination but whose name was not, on the day before that day, on the list of trademark agents kept under section 28 of the Trademarks Act.
note
Federal laws of Canada reproduced under the Reproduction of Federal Law Order (SI/97-5); not the official version. Source: Justice Laws Website.